Free Objections - District Court of Delaware - Delaware

Case 1:04-cv—O0858-SLR Document 362-4 Filed 11/O2/2005 Page 1 of 3
EXHIBIT C

Case 1:04-cv—O0858-SLR Document 362-4 Filed 11/O2/2005 Page 2 of 3

Not Reported in F.Supp.2d Page l
2002 WL 1268047 (D.De1.}
• (Cite as: 2002 WL 1268047 {D.l)el.))
amendment retiects facts as averted by the inventor
Motions, Pleadings and Filings in his declaration. Ex. 3)
Only the Westlaw citation is currentty available. n. As a general principle, depositions of triat counsel
are limited to those circumstances where "tne party
seeking to take the deposition has shown that (1) no
United States District. Court, D. Delaware. other means exist to obtain the information than to
ALLERGAN INC. and Allergan Sales, Inc., depose opposing eotinsei; (2) the information sought
Plaintiffs. is relevant and nonprivileged; and (3) the information
v. is crucial to the preparation of the case." Shelton v.
PHARMACEA CORPORATION. Pharmacia AB, Am, 1'Momrs Corgi. SGS F.2d 1323, l327 {Sth
Pharmacia Enterprises SA. and Pharmacia & Cir.E92%7) (internal citation omitted). Cf, Erzviron
Upjohn Company, Defendants, Prods., int-. ta Total Corztainment, Inc., 41
and U.SP.Q.2d 1302. $306 lE.D.Pa..l996) {"lmpressiorts
THE T RUSTEES OF COLUMSIA UNIVERSITY protected by the wotleproduct doctrine may be
{N THE CÂ¥TY OF NEW YORK, Additional discovered when directly relevant to the litigation and
Defendant on Counterclaint in Reply. when the need for production is compelling."); gig;
N0. Civ.A.0l-141-SLR. Rnd links. inc. tn Plitzrmacia intxl 130 F . RD. ll6.
122 tN,D.Cal.l99{3t {"iA|n attorneys opinion work
May 17,2002 product is discoverable where such information is
directly at issue and the need for production is
MEMORANDUM ORDER compelling?). Moreover, absent a prima facie
showing of fraud, an allegation of inequitabie
• ROBINSON. J. conduct. in and of itself, does not vitiate the attorney
cttent privilege or the protections of the attorney
*1 At Wilmington this l7tlt day of May, 2002, work product doctrine. See In re Spalding Sports
having reviewed the various pending discovery Woridwide, Inc., 203 F.3d 800. 806-07
motions and the papers submitted in connection rFed.Cir.2000).
therewith;
c. The court concludes that plaintiffs have not met
IT IS ORiUi~?Rt~?D that: their burden to demonstrate a compelling need for the
requested discovery. Piaintiffs apparently contend, in
E. Coiumbitfs motion for a protective order support of their ineqtiitabie conduct contentions, that
precluding plaintiffs from deposing and obtaining Mr. White knew or should have known that one or
documents trom John P. White, txsquire (D .t. ‘/V) is more co-inventors coitaborated in and contributed to
granted. the conception and reduction to practice of the
patented invention and was obligated to so inform the
a. Piaintiffs have subpoenaed Columbine lead triai PTO. The court suggests that until such time as
counseli Mr. White, to appear for a deposition on the plaintiti"s have deinonstrated the truth of the matters
issue of inventorship of U.S. Patent No. 4.599.353 asserted (ie, there were ctyinventors), Mr. Wlaite's
( "the '353 patent"). More specifieaity, plaintiffs ltnovviedge is irrelevant. Because the issue ot`
contend "that the inventor of the '353 patent, with tnequitabke condttct is a matter for the court to
Coittmbia's ful} knowledge and participation through determine, and because the factual predicate to the
its attorneys, faiied to credit one or more co~irtver1tors issue of inventorship can be pursoed independent of
who collaborated in and contributed to the conception Mr. White's testimony (through the depositions of the
and redttction to practice of the '353 invention." (DJ. inventor and alleged co—inventors and through access
87 at 4) Plaintiffs argue that Mr. White has relevant to the documents that reflect the inventive process),
information based on an amendment filed by Mr. the court deciines to permit the deposition of Mr.
White wherein he declares that "lalpplicant is the White at thistirne.
sole inventor ot the invention described and claimed
. in the subject application? Q; Ex. 2 at 4) The *2 2. Defendants motion to compei the production
© 2005 'l“hornsonfWest. No Claim to Orig. U.S. Govt. Works,

Case 1:04-cv—O0858-SLR Document 362-4 Filed 11/O2/2005 Page 3 of 3
Not Reported in F.Supp.2d Page 2
2002 WL 1268047 (D.Del.)
(Cite as: 2002 WL 1268047 (D.Dei.))
0 of documents (DJ.82) is granted to the extent rl. Consistent with the above reasoning, the court
explained beiow. concludes that the oniy equitable way for a patentee
to test the knowledge of an alleged wiilful infringer
a. Defendants have moved to compel plaintiffs to (so as to test the reasonableness of its evaluation of
produce "all documents relating to the subiect matter counsels opinions) is for the alieged wiliful infringe:
of three opinion ietters provided by their counsel. to disclose all of the information it possessed prior to
Finnegan, Henderson, Farabow, Garrett Sz Donner, or at the time it obtained opinions of counsel as to the
LLP ("Finnegan, Henderson"), and to permit subject matters discussed in such opinions. lFNil
questioning of Allergan witnesses regarding the
subject matter of those opinion letters." (ld. at ll By E}; The court recognizes that the scope ot
way of background, plaintiffs have chosen to rely discovery allowed at bar is relatively broad
upon the opinions written by Finnegan, Henderson in and potentiaiiy prejudicial to piaintiffs.
defense of the claim of wiilful infringernent. Therefore, rather than requiring disclosure
Plaintiffs have produced the three opinion letters and consistent with this order at this time, the
drafts thereof, and "all communications between court wiil bifnrcate the issue of wiiifnlness,
Allergan and Finnegan regarding those ietters as well stay discovery relating to wiilfulness, and
as all of the materials that Aiiergan considered in conduct a separate trial with a new jury in
connection with its reliance on the letters." the event plaintiffs are found to infringe
Defendants seek, in addition to the above, valid patents. See Novartis Pltorms. Corg, v.
"documents relating to [Allergarfsl other Ear: Labs Mfg. Inc. No. 00—S00—J3F. 2002
infringement and validity analyses or the patents? WL 576038. at *3 n. 2 gD.Det. Mar. 22%.
(ld. at 3) 2002;.
b. From the courts perspective, the question posed 3. Plaintii’f<' motion to compel the production of
by this discovery dispute is whether the scope ot` a documents withheld nnder the common legal interest
party's voluntary waiver is defined by the coarse of doctrine (131.99) is denied as untimely. The parties
conduct between the party and its opinion counsel, or agreed to exchange their privilege iogs on January
0 whether it is defined by the subject matter discussed 23, 2002. By stipulation tiled on March 1 l, 2002, the
in the opinion letters. The court concludes that it is discovery cutoff date was extended to March 15,
the latter. 2002. Plaintiffs tiled the instant motion on April 8,
2002. Motions that relate to fact discovery most be
c. It is undisputed that, fited during fact discovery, especially where, as here,
{wlhen an alleged infringer decides to respond to a the underlying facts relating to the motion were
claim of willful infringement by offering evidence known to plaintiffs in ianuary 2002. Therefore, the
that he or she reasonably and in good faith relied court declines to address the motion on its rnerits.
on advice of counsel in making, using or selling the
allegediy infringing device, then the advice *3 4i. Plaintiffs motion for leave to file a sur—reply
becomes relevant. and admissible. Documents and brief {Dl.96) is denied as moot,
testimony relating to that advice are relevant. in that
they are probative of the alleged infringefs intent. 2002 WL 1268047 (D.Dei.)
They are admissibie because the alleged infringer
has waived the privilege as to the subject matter of Motions, Pleadings and Filings {Back to tom
the advice.
Thorn EM} Nor;/2 Am., Inc. v. Micron Tech. Inc., • i:0lC\#’{lUl4`i (Docket)
$37 F.Su_Qp. old. 62} gD.Del.l993]. In ortler to (Mai.Oi,200§)
determine whether the aiieged wiliful infringer
"reasonabiy and in good faith relied on" the advice END O? DOCUMENT
rendered hy opinion counsel. it is appropriate to test
the knowledge of the alleged willful irttringer
concerning the subject matter ofthe opinion. Cf id.
(the patentee should be entitled to discover facts
reiating to what the alteged williul intringer "l and had concluded about the credibility, vaine and
m reasonableness of the opinionsf'}.
© 2005 Thoinson/W est. No Claim to Orig. U.S. Govt. Works.